On March 7, 2025, the Federal Circuit issued a decision resolving the ongoing patent litigation between AliveCor and Apple concerning methods of cardiac monitoring purportedly employed in certain of Apple’s Watches. The Court’s ruling upheld the Patent Trial and Appeal Board’s (“Board”) decision invalidating several of AliveCor’s patents related to cardiac monitoring technology and overturned an earlier International Trade Commission (“ITC”) decision that could have led to an import ban on the Apple smartwatch. While the decision is important to both companies competing in the space, it also serves as a reminder of the importance of raising and preserving issues for a potential appeal, something the Federal Circuit found AliveCor failed to do.
Background
AliveCor, a medical device manufacturer, accused Apple of infringing certain of its patents drawn to methods for detecting and confirming cardiac arrhythmias. Specifically, the ’499 and ’731 patents describe “a method for monitoring a subject to determine when to record an electrocardiogram (ECG).” And, the ’941 patent describes a wearable device designed to predict the occurrence of arrhythmias. An embodiment of those patents involves the use of a smartwatch configured with a heart rate monitor such as “an optical sensor to detect the fluctuation of blood flow,” which uses light to measure volume changes of circulating blood. AliveCor contended that Apple’s integration of similar functionalities into its smartwatches infringed its patent rights.
AliveCor filed a complaint in the ITC on April 20, 2021 alleging that Apple was importing or selling products infringing certain claims of its patents, and the ITC instituted an investigation on May 26, 2021. Subsequently, on June 9, 2021, Apple filed inter partes review petitions before the Board contenting those patents were unpatentable over certain asserted prior art. Those IPRs were instituted on December 8, 2021.
Shortly thereafter, AliveCor’s counsel contacted Apple’s counsel and requested Apple’s consent to introduce in the IPR proceedings evidence of secondary considerations that had been produced by Apple in the parallel ITC investigation. Critically, neither party apprised the Board of this discovery dispute at any point during the IPR proceedings. Nor did AliveCor ever ask the ITC to grant it permission to use the materials produced by Apple in the ITC investigation in the IPRs.
On June 27, 2022, an ITC administrative law judge (“ALJ”) issued a decision upholding the validity of various claims of the asserted patents as nonobvious in light of certain prior art combinations. In reaching its conclusion, the ALJ found that AliveCor had presented evidence of secondary considerations sufficient to rebut Apple’s showing of obviousness, specifically that, among other things, “[t]he nature and volume of industry praise is unusual, particularly the praise published in a respected medical journal . . . .” The IPR panel in the parallel patent office proceeding arrived at a different result, however, and invalidated the asserted claims on obviousness grounds. In so holding, no evidence concerning secondary considerations was ever presented to the Board.
The Appeal
In its appeal of the patent office decision, AliveCor raised three main issues, each of which was rejected by the Federal Circuit. AliveCor’s first two arguments challenged the Board’s obviousness finding. However, the Federal Circuit dispensed with those arguments finding the Board’s decision was supported by substantial evidence.
In its third argument, AliveCor argued that Apple violated PTAB discovery duties by failing to produce in the IPR proceedings the same secondary consideration evidence that the ALJ had found persuasive in the parallel ITC investigation. Without reaching the merits of that argument, the Federal Circuit held that AliveCor forfeited its argument by failing to raise and preserve the issue with the Board. Indeed, the Federal Circuit explained AliveCor failed to advance any argument to justify excusing AliveCor’s forfeiture, especially since AliveCor could have informed the Board it believed Apple was violating its discovery obligations, requested that the Board allow AliveCor to introduce evidence from the ITC in the IPR proceedings or refer the Board to the publicly available ITC ALJ Initial Decision.
Takeaways
- The failure to preserve discovery disputes may lead to grave consequences such as, in this instance, patents being invalidated, the loss of valuable assets.
- The Federal Circuit’s decision serves as a reminder of the importance to zealously advocate for your client by raising and preserving all possible issues for a potential appeal. Such issues include not just legal claims and defenses, but also evidentiary issues and associated rulings. Failure to do so could result in forfeiting those issue on appeal.
- Where possible, establish similar factual records in parallel proceedings and highlight inconsistencies in positions raised by your adversaries. Take time to raise all such issues and, where necessary, inform your judge or tribunal of your obligations to raise and preserve issues on behalf of your client.
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